DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-19, in the reply filed on October 31, 2025 is acknowledged.
Disposition of Claims
Claims 1-27 are pending.
Claims 1-4, 10-12, 14-17 & 19 are rejected.
Claims 5-9, 13 & 18 are objected to.
Claims 20-27 are withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“a first optical element… configured to receive and reflect” in Claims 5-7 & 12-15, as described in Paras. [0050] & [0069] of Applicant’s specification.
“a second optical element… configured to receive and reflect” in Claims 5-6, 9 & 16-17, as described in Paras. [0051] & [0067] of Applicant’s specification.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 14-15, Claims 14-15 recite the limitation “the first optical system” on Line 2 & Lines 2-3, respectively. There is insufficient antecedent basis for these limitations in the claims. For the purpose of examination, “the first optical system” is being interpreted as “the first optical sub-system”.
Regarding Claims 16-17, Claims 16-17 recite the limitation “the second optical system” on Lines 7-8 & Line 4, respectively. There is insufficient antecedent basis for these limitations in the claims. For the purpose of examination, “the second optical system” is being interpreted as “the second optical sub-system”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 10-12, 15-17 & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kasamatsu et al. (hereinafter "Kasamatsu") (US 2012/0310047).
Regarding Claim 1, Kasamatsu discloses a system (Fig. 1, 1; [0053]) comprising:
a laparoscope (Fig. 1, 10; [0054]) including a first port (Fig. 2, 30c; [0056]) and a second port (Fig. 2, 30a; [0056]);
an optical system (Fig. 1, an optical system comprising 2 and 20; [0054] & [0055]) comprising a first port coupling (Fig. 2, 20a; [0057]), a shortwave infrared SWIR sensor coupling (Fig. 2, 23; [0063]) configured to couple to a SWIR sensor (Fig. 2, 24; [0063]), and a visible-light sensor coupling (Fig. 2, 25; [0065]) configured to couple to a visible-light sensor (Fig. 2, 26; [0065]),
wherein the optical system is configured to optically couple to at least the second port of the laparoscope via the first port coupling (see Fig. 2),
wherein the optical system is configured to receive a detection SWIR beam (Fig. 2, L4; [0062]) from the second port (see Figs. 2 & 3) and direct at least a portion of the detection SWIR beam to the SWIR sensor coupling (see Fig. 3), and
wherein the optical system is further configured to receive a detection visible-light beam (Fig. 2, L3; [0062]) from the second port (see Figs. 2 & 3) and direct at least a portion of the detection visible-light beam to the visible-light sensor coupling (see Fig. 3).
Regarding Claim 2, Kasamatsu discloses the system of Claim 1. Kasamatsu further discloses wherein the laparoscope is configured to receive an inspection visible-light beam (Fig. 4, L1; [0075]) via the first port (see Fig. 4), and an inspection SWIR beam (Fig 4, L2; [0075]) via one of the first port (see Fig. 4) and the second port.
Regarding Claim 3, Kasamatsu discloses the system of Claim 2. Kasamatsu further discloses wherein the optical system includes a SWIR source coupling (Fig. 4, 55; [0075]) configured to couple to a SWIR source (Fig. 4, 52; [0075]) and receive the inspection SWIR beam via the SWIR source coupling (see Fig .4).
Regarding Claim 4, Kasamatsu discloses the system of Claim 3. Kasamatsu further discloses wherein the detection visible-light beam is generated based on an interaction between a target tissue and at least a portion of the inspection visible-light ([0100]), and wherein the detection SWIR beam is generated based on an interaction between the target tissue and at least a portion of the inspection SWIR beam ([0105]).
Regarding Claim 10, Kasamatsu discloses the system of Claim 2. Kasamatsu further discloses wherein the inspection SWIR beam and the detection SWIR beam have a wavelength between 0.9 microns and 2 microns (Figs. 3 & 4, L2 & L4 are NIR; [0011] & [0105]).
Regarding Claim 11, Kasamatsu discloses the system of Claim 3. Kasamatsu further discloses wherein the optical system includes:
a second port coupling (Fig. 2, C; [0092]) configured to couple to the first port of the laparoscope ([0092]); and
a visible-light source coupling (Fig. 4, 51; [0075]) configured to couple to a visible-light source (Fig. 4; 50; [0075]), and receive the inspection visible-light beam via the visible-light source coupling (see Fig. 4).
Regarding Claim 12, Kasamatsu discloses the system of Claim 11. Kasamatsu further discloses wherein the optical system includes a first optical sub-system (Fig. 1, 20; [0055]) coupled to the second port of the laparoscope ([0056]), the first optical sub-system including:
a first optical element (Fig. 3, 21; [0062]) configured to receive the detection visible-light beam and the detection SWIR beam via the first port coupling and the second port (see Fig. 3), transmit at least a portion of the detection visible-light beam ([0062] & [0135]), and reflect at least a portion of the detection SWIR beam ([0062] & [0135]).
Regarding Claim 15, Kasamatsu discloses the system of Claim 12. Kasamatsu further discloses wherein at least a portion of the detection visible-light beam is directed from the first optical element out of the first optical system via the visible-light sensor coupling (see Fig. 3).
Regarding Claim 16, Kasamatsu discloses the system of Claim 12. Kasamatsu further discloses wherein the optical system includes a second optical sub-system (Fig. 1, 2; [0054]) coupled to the first port of the laparoscope ([0092]) and including a second optical element (Fig. 4, 56; [0075]),
wherein the second optical element is configured to receive the inspection visible-light beam via the visible-light source coupling (see Fig. 4) and reflect at least a portion of the inspection visible-light beam ([0075] & [0135]), and
wherein the inspection visible-light beam is directed out of the second optical system via the second port coupling and the first port of the laparoscope (see Fig. 4).
Regarding Claim 17, Kasamatsu discloses the system of Claim 16. Kasamatsu further discloses wherein the second optical element is configured receive the inspection SWIR beam via the SWIR source coupling (see Fig. 4) and transmit at least a portion of the inspection SWIR beam ([0075] & [0135]), wherein the inspection SWIR beam is directed from the second optical element out of the second optical system via the second port coupling and enters the laparoscope via the first port (see Fig. 4).
Regarding Claim 19, Kasamatsu discloses the system of Claim 2. Kasamatsu further discloses wherein the laparoscope includes:
a first optical path (Fig. 4, 30g; [0061]) configured to optically couple the first port with an output aperture of the laparoscope (see Fig. 4), wherein the inspection visible-light beam and the inspection SWIR beam are configured to travel along the first optical path ([0061] & [0079]); and
a second optical path (Fig. 4, 30f; [0062]) configured to optically couple the output aperture with the second port (see Figs. 2 & 4), wherein detection visible-light beam and the detection SWIR beam are configured to travel along the second optical path ([0062]).
Allowable Subject Matter
Claims 5-9, 13 & 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 5, Kasamatsu discloses the system of Claim 3. Kasamatsu further discloses wherein the optical system includes a first optical element (Fig. 4, 56; [0075]) configured to receive the inspection SWIR beam (see Fig. 4) and transmit at least a portion of the inspection SWIR beam ([0075] & [0135]).
Kasamatsu fails to explicitly disclose wherein the optical system further includes a first polarizer configured to receive the inspection SWIR beam, and transmit a polarized portion of the inspection SWIR beam having a first polarization; wherein the first optical element is downstream from the first polarizer and configured to transmit a portion of the inspection SWIR beam having the first polarization; a second optical element configured to receive the inspection SWIR beam and reflect at least a portion of the inspection SWIR beam out of the optical system via the first port coupling and the second port of the laparoscope; and wherein the second optical element is configured to receive the detection visible-light beam and the detection SWIR beam via the first port coupling and the second port, transmit at least a portion of the detection visible-light beam, and reflect at least a portion of the detection SWIR beam.
Regarding Claim 13, Kasamatsu discloses the system of Claim 12. Kasamatsu fails to explicitly disclose wherein the first optical sub-system further includes a polarizer configured to receive the detection SWIR beam reflected by the first optical element and transmit at least a portion of the detection SWIR beam having a first polarization.
Regarding Claim 18, Kasamatsu discloses the system of Claim 2. Kasamatsu further discloses wherein the laparoscope includes:
a first optical path (Fig. 4, 30g; [0061]) configured to optically couple the first port with an output aperture of the laparoscope (see Fig. 4), wherein the inspection visible-light beam is configured to travel along the first optical path ([0061] & [0079]); and
a second optical path (Fig. 4, 30f; [0062]) configured to optically couple the output aperture with the second port (see Figs. 2 & 4), wherein the detection visible-light beam, and the detection SWIR beam are configured to travel along the second optical path ([0062]).
Kasamatsu fails to explicitly disclose wherein the inspection SWIR beam is configured to travel along the second optical path. On the contrary, the inspection SWIR beam L2 is only configured to travel along the first optical path 30g with the second optical path 30f configured only to receive the detection beams L3 and L4. Further, modifying Kasamatsu to permit inspection light (i.e., illumination light) through the second optical path (i.e., an imaging path) would destroy the function of Kasamatsu as the second optical path 30f is not capable of being an illumination pathway.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2024/0280490; US 2023/0032021; U.S. 11,382,487; US 2019/0328216; US 2019/0159663; US 2016/0062103; US 2016/0022126; US 2015/0238071; US 2013/0271768; US 2012/0268573; US 2003/0078477; and US 2001/0007920.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CAREY can be reached at (571)270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795